United States: District Of Delaware Continues Experimental Practice Of Resolving Unrelated Section 101 Motions In A Single Hearing, Denying One Motion And Granting-In-Part Another Motion

Continuing an experimental practice of holding a single hearing to decide multiple unrelated Section 101 motions brought under Rule 12, the District of Delaware issued an order on January 2, 2020, denying one motion and granting-in-part a different motion. In Smart Locking Technologies, LLC v. Igloohome Inc., the court denied defendants’ motion to dismiss under Rule 12(b)(6). At the same time, in Arendi S.A.R.L. v. LG Electronics., Inc., the court granted-in-part defendants’ motion for judgment on the pleadings under Rule 12(c).

Smart Locking Technologies, LLC v. Igloohome Inc.

Plaintiff Smart Locking Technologies, LLC sued defendants Igloohome Inc. and LockState, Inc. for infringing two patents over locking mechanisms that use temporary or single-use access codes. The court analyzed a representative claim from Patent No. 6,300,873, which includes a locking mechanism comprising an access code entry unit configured to accept access codes and an actuator configured to unlock upon entry of authorized access codes. Defendants filed a 12(b)(6) motion to dismiss for failure to state a claim, arguing that the asserted claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101.

To determine whether the representative claim was directed to non-patentable subject matter, the court applied the two-step test of Alice v. CLS Bank International. Under step one, the court found that the claim was directed not toward an underlying abstract idea, but toward a device, specifically the two components of an actuator and an access code entry unit. The court agreed with defendants that a tangible product alone does not necessarily render an abstract idea patent-eligible. But here, there was sufficient specificity to limit the invention to embodiments configured to accept a one-time use access code, thus this claim was not directed to an abstract idea.

The court also analyzed the claim under the second step of the Alice test, finding that the plaintiff had adequately pleaded facts to support the conclusion that the claimed invention was not routine, conventional or well understood at the priority date. Plaintiff bolstered its complaint by specifically describing a problem in the prior art and the solution presented by its patented technology.

Plaintiff had pleaded sufficient facts to support a conclusion that its patents covering locking mechanisms with temporary access codes were not invalid under § 101, and the court denied Defendants’ Rule 12(b)(6) motion to dismiss.

Arendi S.A.R.L. v. LG Electronics., Inc.

Plaintiff Arendi S.A.R.L. sued several telecom giants for infringing four patents that claim methods of information handling between computer programs, such as displaying a document in a first program, analyzing information in the first program, conducting a corresponding search of the information in a second program and performing an action in the first program based on results of the search. Defendants moved for judgment on the pleadings under Rule 12(c) on the ground that the four patents claimed a patent-ineligible abstract idea.

The court first analyzed whether the claims recite an improvement in computer functionality or merely automation of an activity performed in a noncomputerized context. It concluded that the claims fell between these extremes, as retrieving data for a first document from a second document is a difficulty present in both human and computerized worlds.

Applying the Alice test to a representative claim of Patent No. 7,917,843, the court found that although the claim includes an abstract idea, it is directed to an improvement in computer functionality. The court relied on several Federal Circuit cases that found improvements in spreadsheet functionality, software operation under license, display interfaces for small screens and scans for computer security to be patent-eligible subject matter. Defendants failed to address the improvement that plaintiff’s patent claims, and the court denied defendants’ Rule 12(c) motion with respect to the ’843 patent.

However, the court found that the claims of the other asserted patents were directed only to an abstract idea and not an improvement in computer functionality. Specifically, those other patents failed to claim coordination between two programs or simultaneous operation of two programs. The court granted the Defendants’ Rule 12(c) motion with respect to these other patents.

Practice tip: To manage dockets and conserve judicial resources, the District of Delaware appears to be doubling down on its practice of consolidating Section 101 motions in cases involving unrelated parties and technologies. The court also seems willing to grant a 12(b) or 12(c) § 101 motion if the facts of the case can be fit to existing Federal Circuit jurisprudence. Practitioners should closely tie their § 101 arguments to existing Federal Circuit case law whenever possible.

Case: Arendi S.A.R.L. v. LG Electronics., Inc., C.A. No. 12-1595-LPS; C.A. No. 12-1596-LPS; C.A. No. 12-1599-LPS; C.A. No. 12-1601-LPS; C.A. No. 12-1602-LPS; C.A. No. 13-919-LPS; C.A. No. 13-920-LPS; C.A. No. 19-992-LPS; C.A. No. 19-993-LPS (D. Del. Jan. 2, 2020)

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